Category: Motion to Compel

Magistrate Judge Sorokin denied Puma’s motion to compel supplementation of Nike’s preliminary infringement claim charts. Nike, which is asserting seven patents against seventeen Puma products, filed and then supplemented its preliminary infringement contentions pursuant to L.R. 16.6(d)(1)(A). The District of Massachusetts amended L.R. 16 in 2018 to require the patentee produce claim charts providing with as much specificity as reasonably possible a description of where and how each claim element is found in the accused products. Nike’s most recent supplementation, totaling 260 pages, contain full color photographs with annotations showing where each element is located on each accused product. Judge Sorokin found this sufficient at the early stage of the proceedings to meet the requirement of the amended rule.

Magistrate Judge Boal granted in part and denied in part SiOnyx’s motion to compel testimony and documents concerning Hamamatsu’s customer agreements. Hamamatsu had previously been compelled to produce sales agreements pertaining to the accused products. SiOnyx asserts that as a result of that production, it learned that Hamamatsu had actively negotiated with a major (sealed) customer of SiOnyx during the course of the litigation. SiOnyx sought additional depositions concerning the late-produced agreements as well as documents concerning the agreements. Judge Boal found SiOnyx’s requests overly broad, in that they covered not only the newly-discovered information but also topics that SiOnyx could have covered in prior depositions, but acknowledged that SiOnyx was entitled to some additional discovery as a result of the late production She ordered Hamamatsu to respond to depositions by written question pursuant to FRCP 31.

Abiomed filed a declaratory judgment action seeking a declaration of non-infringement and invalidity of six Maquet patents relating to guidable intravascular blood pumps, and Maquet brought infringement counterclaims. Judge Saylor partially granted Abiomed’s motion to compel supplemental responses to Abiomed’s invalidity contentions. Maquet had originally asserted 98 claims, and Abiomed provided invalidity contentions as to all 98 claims. In response to a court order, Maquet narrowed the case to 35 claims; pursuant to the court’s order, Maquet will have to further narrow their case to 18 claims following the Markman order, after which Abiomed will have to narrow its list of primary references to 12. Maquet objected to responding to Abiomed’s invalidity contentions because they necessarily cover claims and prior art that will ultimately not be a part of the trial, and also asserted that Abiomed improperly sought expert analysis prematurely. Judge Saylor disagreed, noting that Maquet had the benefit of seeing Abiomed’s invalidity contentions prior to its initial narrowing of claims and that therefore Abiomed should get to see Maquet’s validity contentions prior to reducing the references it was asserting. Judge Saylor did, however, postpone the date by which Maquet would have to respond to the date that it would have to provide its final listing of 18 asserted claims, and limited Maquet’s response to validity contentions concerning those 18 claims. In a separate order, Judge Saylor denied Abiomed’s motion to compel discovery of Maquet’s patent assessments and valuations. Maquet had produced a presentation given to a different heart pump company that included reference to a proposal made by Maquet that made reference to the amount Maquet believed the company could obtain from Abiomed should the company acquire the patents. Abiomed, believing that this would reveal a substantially lower valuation than Maquet was seeking in damages, sought additional information on how Maquet came to the valuation in the proposals; Judge Saylor accepted Maquet’s representation that it had no non-privileged valuations to produce.

MedIdea sued Depuy for patent infringement connected with total knee replacement prostheses in the Northern District of Illinois. Following the TC Heartland decision, the case was transferred to Massachusetts, where it has undergone contentious discovery. Judge Sorokin denied MedIdea’s request for detailed royalty reports, in light of MedIdea’s expert acknowledging that documents already produced provided sufficient information to calculate damages. He also refused to compel production, at no cost to MedIdea, of different sizes of the accused products, finding no authority to require the provision of thousands of dollars of products for free when the sole difference was the size. Judge Sorokin also denied MedIdea’s demand that DePuy produce a 30(b)(6) witness to testify on the nature of DePuy’s search for documents and choice of keywords for searching electronic records, in light of DePuy’s statement that only outside counsel participated in that task and in light of MedIdea’s delay of eight months form the time when the schedule required the parties to meet and confer on electronic discovery issues. Finally, Judge Sorokin granted DePuy’s motion to quash subpoenas to two inventors of prior art identified by Depuy and that served as the basis for institution of an IPR proceeding. Judge Sorokin noted that MedIdea had been obliged to identify any relevant witnesses in its initial disclosures more than a year prior, and had failed to seek to supplement its disclosures. Moreover, the reference was more than ten years old, and was but one of many references cited by DePuy, but was the sole reference on which the IPR was granted, creating an inference that MedIdea was seeking their depositions in the litigation to circumvent rules that would prohibit such in the IPR proceeding itself.

Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.

Judge Saylor denied MRSI’s motion to compel more detailed infringement contentions. This case was originally brought in 2015 in the Southern District of California, with Palomar asserting infringement of U.S. Patent No. 6,776,327. In 2016, the case was stayed pending resolution of an IPR proceeding filed by MRSI; the case resumed progress when most of the claims were deemed valid by the PTO. In August 2017, MRSI moved to transfer venue to the District of Massachusetts in light of the TC Heartland decision on patent venue, and the case was transferred in February of this year. In denying the motion to compel, Judge Saylor noted that the district’s new local patent rules do not apply to this case, as the scheduling order was issued prior to June 1, 2018, that the prior applicable rule did not require any particular level of detail for infringement contentions, and that the scheduling order itself required only an identification of the claims asserted, products that are accused of infringing those claims, and whether the infringement is literal or by equivalents. While he noted that the contentions are skeletal, Judge Saylor determined that they met the requirements of the applicable rule and the scheduling order, and he indicated that at the early stage of the proceeding, there is no requirement for the claim construction contentions sought by MRSI.

Merchant Consulting served a third-party subpoena on Blue Square Resolutions, a Scottsdale Arizona entity, seeking documents in its trademark infringement case against Beckpat. When Blue Square failed to respond or otherwise make contact with Merchant, Merchant filed a motion for contempt pursuant to Fed. R. Civ. P. 45(g). In granting the motion, Magistrate Judge Kelley found that the subpoena was properly served by mailing it to Blue Square, noting that in Massachusetts, service is proper where effectuated by a means reasonably calculated to complete delivery and the respondents had actual notice of the subpoena. She found that Massachusetts was the proper forum to enforce the subpoena, because the subpoena called for documents to be produced in Massachusetts, making this state the district where compliance was required, particularly given that Blue Square never raised an objection to production in Massachusetts. Having found Blue Square in contempt, Judge Kelley ordered Blue Square to comply with the subpoena within ten days, with a recommendation to the District Court that failure to do so should result in an order to show cause why monetary sanctions should not be imposed. She further recommended that Blue Square be ordered to pay Merchant’s legal fees associated with bring the motion for contempt.

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The D. Mass. IP Litigation Blog will monitor the U.S. District Court for Massachusetts, with a special interest on patent, trademark, trade secret, antitrust, and copyright litigation. Since the Supreme Court’s TC Heartland decision, we have seen an increase in intellectual property filings in D. Mass. due to the high concentration of technology and life sciences companies in the Commonwealth and because of the Court’s ability to handle complex, accelerated matters. We plan on providing our readers with timely insights on recent cases.